Oprah Hasn’t Dispatched Suit Over Slogan Just Yet

     MANHATTAN (CN) – Fair use may not shield Oprah Winfrey from claims over the “Own Your Power” slogan developed by a motivational speaker, the 2nd Circuit ruled.
     Simone Kelly-Brown is the owner and developer of Own Your Power Communications and registered the phrase as a trademark in 2008 to promote “a personal brand of self-awareness and motivational communications services nationally.”
     Winfrey used the phrase on the September 2010 cover of O Magazine while promoting her annual “power list” in that issue. The media icon also used it as the title of a panel discussion with some of the power players coroneted in 2010, including journalist Diane Sawyer, designer Vera Wang and actress Julia Roberts.
     Chico’s, Wells Fargo and Clinique co-sponsored the event, which Winfrey later discussed in an episode of the “Oprah Winfrey Show” and in a subsequent issue of the magazine.
     In a July 2011 complaint, Kelly-Brown claimed that Winfrey’s use of the phrase violated the Lanham Act. Her complaint also named Harpo Productions, Hearst Corp., Wells Fargo, Estee Lauder, Chico’s and Clinique.
     U.S. District Judge Paul Crotty dismissed the case back in March 2012 after finding that “the fair use defense allows use of protected marks in descriptive ways, provided it does not identify the source or origin of the goods.”
     In addition to tossing the trademark infringement claim, Crotty also said Kelly-Brown could not claim false designation of origin or “reverse confusion,” a term for when a consumer believes “that the junior user is the source of the senior user’s goods.”
     A three-judge panel of the 2nd Circuit reversed Friday, finding that Kelly-Brown has “plausibly alleged that Oprah was attempting to build a new segment of her media empire around the theme or catchphrase ‘Own Your Power,’ beginning with the October Issue and expanding outward from there.”
     “The defendants have not adequately established a fair use defense,” Senior Judge Chester Straub wrote for the panel.
     In support of her claims, Kelly-Brown pointed to Winfrey’s promotion of the “Own Your Power” event as the “first ever.” The event also allegedly featured motivational content.
     “Kelly-Brown argues that, taken together, these uses suggest that the defendants were attempting to build an association with consumers between the phrase ‘Own Your Power’ and Oprah,” Straub wrote. “At this stage in the litigation, this array of uses is sufficient for us to infer a pattern of use.”
     Winfrey meanwhile has failed to show that the phrase “Own Your Power” was merely descriptive, according to the ruling.
     “Though both the center phrase and the article headline make use of the word ‘power,’ it does not appear that the phrase ‘Own Your Power’ is meant to describe the contents of a particular item in the magazine,” Straub wrote.
     He added that “further information may emerge during discovery that undermines Kelly-Brown’s theory that Oprah’s use was an attempt to create a sub-brand, but her allegations are sufficient at this stage.”
     The federal appeals court remanded the case for further proceedings.

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